Ex Parte Harwood

Board of Patent Appeals and Interferences

Jun 29, 2012

11154153 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/154,153 06/16/2005 Ronald P. Harwood ILC 0143 PUS 2870
22045 7590 06/29/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
GUSHI, ROSS N
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
06/29/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RONALD P. HARWOOD
____________________

Appeal 2010-003307
Application 11/154,153
Technology Center 2800
____________________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
GREGORY J. GONSALVES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/154,153

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 33-60. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention on appeal is relates to illumination. (Spec. 1). More
particularly, Appellant’s invention is directed to an intelligent light fixture
contained within a housing that may be mounted to a light pole. (Abstract).
The claims are directed to a lighting fixture. Claim 33, reproduced
below, is illustrative of the claimed subject matter:
33.A lighting fixture comprising:

a non-translucent housing having a bottom surface and an
aperture in the bottom surface;

a light source enclosed within the housing that directs
light out through the aperture;

a translucent globe enclosing a bottom side of the
housing;

a translucent refractor aligned below the aperture and
within the globe, the refractor having a solid volume defined by
top, bottom, and side portions, wherein the top portion presents
a single input surface for collecting the light for output to a
number of output surfaces on;

an outward perimeter of the side portion; and

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wherein the number of output surfaces define a number
of recesses refractor that re-direct the light laterally towards the
globe.
(disputed limitations emphasized).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Liu US 5,865,533 Feb. 2, 1999
Willis US 3,705,303 Dec. 5, 1972

REJECTIONS
Claims 33-60 stand rejected under 35 U.S.C § 112, first paragraph, as
failing to comply with the written description requirement.
Claim 57 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Liu in view of Willis.

GROUPING OF CLAIMS
Regarding the rejection of claims 33-60 under § 112, first paragraph,
Appellant does not argue the claims separately. (App. Br. 7-8). Therefore,
we decide the appeal for this rejection on the basis of representative
claim 33. See 37 C.F.R. § 41.37(c)(1)(vii). We address the §103 rejection of
claim 57 separately, infra.

ANALYSIS – 112, first paragraph, written description
Issue: Under § 112, does the originally-filed Specification
reasonably convey to the artisan that Appellant had possession
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Application 11/154,153

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of the claimed limitation: “a translucent refractor . . . having a
solid volume,” within the meaning of claims 1-60?

At the outset, we observe that independent claims 33 and 46 each
recite “a translucent refractor . . . having a solid volume.” Independent
claim 56 recites “a translucent refractor . . . wherein a volume of the
refractor . . . is at least equal to: a3.” Independent claim 57 is further limited
by dependent claim 58 which recites “wherein a cross-sectional volume of
the translucent material at each of at least a majority of the light output
surfaces is generally circular and given by the following formula:
πr 2h, wherein r equals a distance to the light output surface from a center of
the refractor and h equals a height of the cross-section.
We further observe that a3 represents the mathematical formula for the
volume of a cube, where a equals the length of any side, and πr 2h is formula
for the volume of a cylinder of radius r and height h. However, none of the
aforementioned limitations relating to a solid volume of the claimed
translucent refractor were present in originally-filed claims 1-22.
The Examiner finds that the aforementioned limitations were not
described in the Specification (including the drawings) in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the
time the application was filed, had possession of the claimed invention. (See
Ans. 7).
To satisfy the written description requirement, a patent Specification
must describe the claimed invention in sufficient detail that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
invention. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319
Appeal 2010-003307
Application 11/154,153

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(Fed. Cir. 2003). An applicant may show possession of the claimed
invention by describing the claimed invention with all of its limitations using
such descriptive means as words, structures, figures, diagrams, and formulas
that fully set forth the claimed invention. Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
In support, Appellant relies in the principal Brief (7-8) essentially on
the Rule §1.132 Declaration by inventor Ronald Paul Harwood (hereinafter
(“Declaration”). In the Declaration, the inventor (Appellant) references,
inter alia, Figure 15, the corresponding description of Figure 15 found in the
Specification (US 20060092638) at paragraph [0074], and the description of
the solid pyramidal reflector 36, as depicted in Fig. 5, and described in
paragraph [0055] of the Specification. (Declaration, statement 4).

App
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03307
/154,153
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Appellant agrees that “[t]he Examiner is generally accurate in his
statements that ray lines should 'bend' as the ray lines enter and exit a 'solid'
material.” (Reply Br. 3). However, Appellant contends that Figure 15 more
likely conveys light passing through a solid rather than through a concave
body, because in a concave body, or hollow refractor, the light rays would
pass through the corresponding side walls at parallel angles. (Reply. Br. 4-5,
emphasis added).
However, our reviewing court guides that “[a] description which
renders obvious the invention for which an earlier filing date is sought is not
sufficient.” Lockwood 107 F.3d at 1572 (quoting Jepson v. Coleman, 314
F.2d 533, 536 (CCPA 1963)). “[I]t is ‘not a question of whether one skilled
in the art might be able to construct the patentee's device from the teachings
of the disclosure.... Rather, it is a question whether the application
necessarily discloses that particular device’” (Id., emphasis added).
Here, we particularly observe that Appellant concedes that “Figure 15
may not entirely illustrate the ‘bending’ of the light rays between the entry
surface and exit surfaces as well as it could.” (Reply Br. 5). Nor do we find
dispositive Appellant’s contention that if refractor 90 (Fig. 15) was in fact a
hollow body, it would include some representation of the hollow cavity such
as the side walls having hidden lines. (Reply Br. 5). Such statement
involves speculation and does not resolve the question of whether the
Specification as filed necessarily discloses the claimed “refractor having a
solid volume.” (Claim 33).
Likewise, we find the Examiner’s statements regarding: (1) the
purported extra cost of making a solid body diffuser, and (2) the fact that the
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prior art is replete with examples of hollow body diffusers (Ans. 16, ¶3), to
be irrelevant to the question of whether the Specification provides written
description support such that one skilled in the art can reasonably conclude
that the inventor had possession of the claimed invention. See Moba, B.V.,
325 F.3d at 1319.
Turning to the portions of the Specification relied on in the
Declaration, we find the description of Figure 15 (para. [0074]) does not
support Appellant’s contention:
[0074] Referring now to FIG. 15, it was discovered by placing a
secondary diffuser 90 a short distance from the aperture 81, the
light would diffuse and fill the whole lens 76. The secondary
diffuser 90 may consist of a series of prismatic or angled
incisions or "cuts" into any clear material such as glass, and
acrylic or other polymers. Such "cuts" re-direct light beams
toward the existing housings lenses 76 for final distribution.

We observe that paragraph [0074] essentially describes the prismatic
or angled incisions on diffuser 90 (as indicated by the horizontal hatching
lines in Fig. 15), and does not establish that diffuser 90 has a solid volume.
Although paragraph [0055] does broadly describe a solid pyramidal reflector
36 (depicted in Fig. 5), which “may be replaced by a conical reflector, or a
reflector of another desired shape,” we find this portion of the Specification
does not necessarily disclose a “translucent refractor … having a solid
volume,” within the meaning of representative claim 33. (emphasis added).
See Lockwood 107 F.3d at 1572. In particular, we find a “reflector” and a
“refractor” are not necessarily the same, in accordance with the plain
meaning of these terms.
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We have fully considered the Appellant’s statements in the
Declaration as evidence. However, the weight to give a declaration depends
upon the amount of factual evidence the declaration contains. See In re
Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991). An expert’s opinion on the
ultimate legal issue must be supported by more than conclusory statements.
In re Brandstadter, 484 F.2d 1395, 1405 (CCPA 1973).
Here, we find the aforementioned paragraphs and Figures of the
Specification,1 as relied on in the Declaration, do not show that the
application necessarily discloses “a translucent refractor . . . having a solid
volume,” within the meaning of representative claim 33.
For the aforementioned reasons, on this record, we find the weight of
the evidence supports the Examiner’s position. Therefore, we affirm the
Examiner’s written description rejection of representative claim 33 under 35
U.S.C. §112, first paragraph. Claims 34-60 fall therewith because Appellant
has not presented separate arguments for these claims. See 37 C.F.R. §
41.37(c)(1)(vii).

Independent Claim 57 - §103 rejection

Issue: Under § 103, did the Examiner err in finding that
the cited references, either alone or in combination,
would have taught or suggested “a translucent refractor
having a translucent material positioned proximate the
light source, the refractor having a light input surface
proximate the light source and multiple light output
surfaces extending around and downwardly away from a

1 See Specification, paras. [0055], [0074], Fig. 15.
Appeal 2010-003307
Application 11/154,153

10
perimeter of the input surface,” within the meaning of
independent claim 57?

Appellant presents the following contentions:
Independent claim 57 relates to a lighting fixture having a light
source and a translucent refractor positioned proximate the light
source. The refractor has a light input surface proximate the
light source and multiple light output surfaces extending
downwardly away from the perimeter of the input surface. The
Liu and Willis refractors fails to suggest this relationship since
neither one of the Liu and Willis refractors are operable in such
a relation as it would require the refractor to not only be
inverted but it would also require the light source to be above
the refractor - both of which are contrary to the teachings and
intended principle of operations of the Liu and Willis patents.

(App. Br. 16).

The Examiner disagrees:
In both Liu and Willis, the light source is already above the
refractor. The Willis refractor would be used just as it is in
Willis. There is no need or suggestion to use it in an inverted
manner.

(Ans. 17).

App
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Appeal 2010-003307
Application 11/154,153

12

DECISION
We affirm the Examiner’s § 112, first paragraph written description
rejection of claims 33-60.
We affirm the Examiner’s obviousness rejection of claim 57.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
ORDER
AFFIRMED

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